Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 12/15/2025 has been entered.
This action is responsive to Applicant’s request for continued examination and amendment/remarks filed 12/15/2025.
Applicant requested a three (3) month suspension of action with the request for continued examination filed 12/15/2025. The three month period for suspension ran from approximately 12/19/2025 (the day after the request for continued examination was processed internally) to 02/19/2025 (three months after the prior date), and the application was returned to the Examiner's docket on 04/08/2026. As more than three months have passed since the request for continued examination/suspension, prosecution is hereby resumed.
Claims 1-13 are currently pending.
Summary of Patent Board Decision & Response to Amendment
In the Patent Board Decision mailed 10/16/2025, the Board affirmed the 103 rejection of record over Minor et al. (US 2010/0122545 A1) in view of Kaneko (US 2010/0108936 A1), Kaneko (US 2009/0090128 A1), and further in view of Yano (US 6,293,472).
The Decision stated that: A. Appellant did not demonstrate the combination of references had any missing instantly claimed elements (p.4 to 5), B. the Office provided a sufficient reason to combine Minor and Kaneko ‘936 (p.5 to 6), C. Appellant did not demonstrate that there was not a reasonable expectation of success in combining the references (p.6 to 8), and D. Appellant had not established the existence of unexpected results (p.8 to 13).
In response to the Patent Board Decision, Applicant has amended claim 1 to further recite “the acid scavenger being an epoxy compound” meaning the acid scavenger component in the refrigerant composition is an epoxy compound.
The rejection of claims 1-13 under 35 U.S.C. 103 as being unpatentable over Minor et al. (US 2010/0122545 A1) in view of Kaneko (US 2010/0108936 A1), Kaneko (US 2009/0090128 A1), and further in view of Yano (US 6,293,472) of record is maintained and has been revised below to reflect the minor change in claim scope made by Applicant’s present claim amendments.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Minor et al. (US 2010/0122545 A1) in view of Kaneko (US 2010/0108936 A1), Kaneko (US 2009/0090128 A1), and further in view of Yano (US 6,293,472).
Minor et al. disclose refrigeration apparatus comprising a compressor, a condenser, an expansion device and an evaporator [0202]. Language drawn to first and second heat exchangers, condensation and expansion of low-pressure gas and condensation and expansion of high-pressure gas recites the conventional parts of refrigeration apparatus which discharge cool air inside and hot air outside. See also [00032]-[00033] of the specification. Refrigerants comprising varying amounts of R-32 greater than or equal to 60%, in admixture with HFO-1234yf or HFO-1234ze, both well-known hydrofluoroolefins, are exemplified in Table 10. Note also the compressor discharge temperatures. The compositions may comprise lubricants, such as polyvinyl ethers and neopentyl esters, a sub-genus of polyol esters [0106], i.e., refrigerator oil. Compositions according to the invention may contain additives. A non-exclusive list is provided at [0100]; “stabilizers” are a suitable additive among this list. Minor et al. specifically teach epoxides, i.e., epoxy compounds, are suitable stabilizers [0124] & [0147].
Acid scavengers (and suitable concentrations thereof) are not explicitly disclosed, nor are air and water content.
Kaneko ‘936 teaches that compression refrigerators generally comprise a compressor, a condenser, an expansion mechanism such as a valve, an evaporator and may comprise a dryer [0002]. See also the teachings regarding a separation temperature at the same passage. Kaneko ‘936 teaches that acid scavengers are useful in refrigeration systems [0011] and they improve the stability of the refrigerator oil composition [0170]. In other words, Kaneko ‘936 teach the acid scavenger is, in essence, a stabilizer. Suitable acid scavengers and concentrations thereof are taught at [0168]-[0169]; the blending amount of the acid scavenger is preferably 0.005 to 5 mass% in ordinary cases. Kaneko ‘936’s list of suitable stability-improving acid scavenger species at [0168] are all epoxy compounds: “Examples of the acid scavenger include: phenyl glycidyl ether; alkyl glycidyl ether; alkylene glycol glycidyl ether; cyclohexeneoxide; α-olefinoxide; and an epoxy compound such as epoxidized soybean oil. Of those, phenyl glycidyl ether, alkyl glycidyl ether, alkylene glycol glycidyl ether, cyclohexeneoxide, or α-olefinoxide is preferable in terms of compatibility with the refrigerant.” Furthermore, all the working examples in Kaneko ‘936 contain 1 mass% of an epoxy compound acid scavenger.
It would have been obvious at the time that the invention was made to incorporate the valve and acid scavenger of Kaneko ‘936 into the refrigeration system and additive(s) of Minor et al. with a reasonable expectation of success, because Minor et al. discloses use of an expansion device, and Kaneko teaches that this is typically a valve. Also, Minor et al. disclose that additives, e.g., stabilizers including an epoxy compound, may be added to the refrigerants disclosed therein, and Kaneko teaches that an acid scavenger including an epoxy compound is a useful stabilizer additive.
While Minor et al. might not teach their epoxy compound stabilizer as functioning as an acid scavenger, Kaneko ‘936 nevertheless teach and clarify epoxy compounds improve stability in refrigerant compositions by functioning as an acid scavenger. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
At [0055], Kaneko ‘128 teaches that moisture content in a refrigeration system should be kept at 300 ppm or less to suppress hydrolysis and corrosion, and that residual air be not greater than 50 ppm to suppress oxidative deterioration. It would have been obvious at the time that the invention was made to provide the water and air concentration parameters taught by Kaneko ‘936 into the refrigeration system of Minor et al. in order to suppress corrosion and deterioration with a reasonable expectation of success.
At col. 5, lines 22+, Yano teaches that expansion valves for refrigeration may be made of aluminum, brass or stainless steel, i.e., metal. It would have been obvious at the time that the invention was made to provide the metal expansion valve construction to the expansion device/valve of the refrigeration system of Minor et al. in view of Kaneko ‘936 with a reasonable expectation of success because Minor et al. in view of Kaneko ‘936 disclose use of a valve as an expansion device and Yano teaches this valve is typically constructed of metal.
The claimed limitation of the acid scavenger reacting with acid produced by decomposition of the refrigerant in order to scavenge the acid would flow naturally from the combined teachings of the references. The claimed function of an acid scavenger component scavenging the acid is precisely the intended and primary purpose of an acid scavenger in the refrigeration arts (to scavenge or neutralize acid). The recited origin of acid as being produced by decomposition of fluorinated refrigerant is a well-known phenomenon in the refrigerant arts, regardless of whether or not it was appreciated in these prior art references.
Regarding claims 3 and 8, the references are silent regarding the presence of fluorine. However, where the same refrigerants may undergo expansion and contraction under the same conditions as those recited, it would appear that compositions comprising some amount of fluorine may be made, regardless of whether or not it was appreciated in the prior art.
Regarding claims 4, 5, and 9-13, Minor et al. disclose at [0100] that anti-oxidation agents and extreme pressure agents are useful additives.
Regarding claims 6 and 7, either polyvinyl ether oils, polyol esters, and/or R-32+HFO refrigerant exhibit this behavior, or these claims are non-elected.
The reference(s) differs from the claimed subject matter in that it does not disclose a composition which reads on applicant’s claims with sufficient specificity to constitute anticipation.
It would have been obvious at the time the invention was made to make such a composition, because the references teach that all of the ingredients recited by applicants are suitable for inclusion in a refrigerant composition and apparatus thereof. The person of ordinary skill in the refrigeration art would expect the recited compositions to have properties similar to those compositions which are exemplified, absent a showing to the contrary.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed Cir. 1990).
Response to Arguments
Applicant's arguments filed 12/15/2025 have been fully considered but they are not persuasive.
Applicant argues the cited references fail to render obvious an apparatus comprising a refrigerant containing at least 60 wt.% of R32 and refrigerator oil, an acid scavenger added in an amount of 1.0-5.0 wt.% being blended with the refrigerator oil, the refrigerant containing an HFO-based refrigerant, the refrigerator oil being polyvinyl ether oil or polyol ester oil, and the acid scavenger being an epoxy compound as required by claimed. Applicant elaborates that, as allegedly discussed in the Appeal Brief filed 09/24/2024 and in previous responses, they have demonstrated unexpected results when the claimed amount of acid scavenger is added to the claimed refrigerant containing at least 60 wt.% R32.
In response, this argument is not persuasive because the prior art of record indeed render obvious an apparatus comprising a refrigerant containing at least 60 wt.% of R32 and refrigerator oil, an acid scavenger added in an amount of 1.0-5.0 wt.% being blended with the refrigerator oil, the refrigerant containing an HFO-based refrigerant, the refrigerator oil being polyvinyl ether oil or polyol ester oil for the reasons of record. The prior art of record rendering this structure prima facie obvious was affirmed by the Patent Trial an Appeal Board in the Decision mailed 10/16/2025. Applicant’s arguments to this structure and allegation of unexpected results are not persuasive in view of the affirmed Decision mailed 10/16/2025 where the Patent Trial and Appeal Board found said Appeal Brief and previous response arguments not persuasive. The Examiner is bound to the Patent Trial and Appeal Board’s Decision and cannot withdraw the rejection over Applicant’s reasons of record because the Patent Trial and Appeal Board specifically found Applicant’s reasons of record not persuasive and insufficient to withdraw the rejection.
Regarding the newly claimed limitation that the acid scavenger is an epoxy compound, Minor et al. and Kaneko ‘936 each teach inclusion of an epoxy compound as claimed. Minor et al. specifically teach epoxides, i.e., epoxy compounds, are suitable stabilizers [0124] & [0147]. Kaneko ‘936 similarly teach a bevy of epoxy compounds as species for their stability-improving acid scavenger and concentrations thereof [0168]-[0169]. Furthermore, all the working examples in Kaneko ‘936 contain 1 mass% of an epoxy compound acid scavenger. Please note that Applicant was previously notified the references of record teach an acid scavenger/stabilizer epoxy compound (see p.13 of the Examiner’s Answer mailed 12/23/2024).
Further regarding the allegation of unexpected results, Applicant’s allegation of unexpected results is not persuasive in view of the extremely detailed reasons of record. See, for example, p.16 to 21 of the Examiner’s Answer mailed 12/23/2024 and p.8 to 13 of the Patent Board Decision mailed 10/16/2025.
The Office further stresses that, while the claims have been slightly limited to require the acid scavenger is an epoxy compound, the chemical identity of the acid scavenger in the comparative showing(s) of record is still entirely unidentified. The testing of one unidentified acid scavenger compound is certainly not commensurate in scope with any epoxy-based acid scavenger compound as permitted by the scope of the claims. Not only does the lack of identification of the tested acid scavenger compound raise a commensurate in scope issue but it is also unclear whether the comparative showing is actually a fair comparison with the closest prior art of record (i.e., how close the single, unidentified tested acid scavenger compound at 1.0 wt.% compares to the disclosed epoxy compound species of acid scavengers at [0168]-[0169] of Kaneko ‘936, which are also preferably provided at 1.0 wt.% per Kaneko ‘936’s examples).
Accordingly, the rejection is maintained for the reasons of record.
Prior Art Cited But Not Applied
The following prior art is made of record and not relied upon but is considered pertinent to Applicant's disclosure and/or to support the prior art references of record:
Wilson et al. (US 7,341,984 B2) teach refrigerant compositions comprising tetrafluoropropene, i.e., an HFO (abstract). The composition may further comprise a co-refrigerant such as difluoromethane (HFC-32) (see paragraph and list bridging col. 13 & 14). The composition may also comprise an epoxide as a stabilizer (col. 7 line 34 to col. 9 line 55), which are specifically disclosed to act as acid scavengers (col. 8 lines 12-15). Wilson et al. serves as evidence stabilizers, especially epoxide or epoxy compound stabilizers, encompass acid scavenging and that acid scavengers are a type of stabilizer.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
April 13, 2026
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